Registered color trademarks are the rarest among the types of trademarks. Most often, word marks, figurative marks, or combinations of words and images are registered as trademarks. However, some companies dream of being able to claim a color exclusively for themselves. Competitors would then be unable to use that color for identical or similar trademarks without infringing on that monopoly.
Imitation of a Competitor’s Color Scheme
In practice, we frequently receive inquiries from clients who believe that a competitor is mimicking their color scheme, to the point where the two companies could be confused. This subjective view often overlooks the fact that, according to case law, consumers of goods or services are accustomed to a limited color spectrum and therefore would not confuse different companies even if they used the same color scheme.
The Golden Bunny
Nevertheless, the Lindt & Sprüngli Group has now succeeded in convincing the Federal Court of Justice regarding the color scheme of its Gold Bunny. This product has been sold in Germany wrapped in gold foil since 1952 and in its current gold hue since 1994. Incidentally, it emerged during the proceedings that more than 500 million Gold Bunnies have been sold in Germany over the past 30 years, making the “Lindt Gold Bunny” the market leader among Easter bunnies. No other bunny is sold more frequently, as it held a market share of over 40% in 2017.
In this case, the issue was not the registration of a color trademark; rather, the corporate group took action against another manufacturer of sitting chocolate bunnies wrapped in gold-colored foil. There was no registered color trademark for the Lindt Gold Bunny. Instead, the case involved another rarity in trademark law: the so-called use-based trademark.
Use-Based Trademark
Trademarks are not created solely through registration. If a mark becomes widely recognized among consumers, the law grants trademark protection solely through the use of the mark—protection that extends even further than that of a standard registered trademark.
In the case of the chocolate bunnies, the requirements for a use-based trademark and a color trademark overlap. A trademark consisting of the protection of a color is granted only if that color is so exceptionally well-known that consumers associate the manufacturer or its product with the color simply by seeing it.
Market Survey
This must be proven in court by the claimant. The claimant needs deep pockets, as the proof must ultimately be provided through a consumer survey. For this purpose, the target consumer group is surveyed by neutral market research firms. Naturally, this must be conducted statistically soundly, which means surveying a sample size in the three- to four-digit range. Anyone who has ever been approached in a city center or on the phone and asked if they’d like to participate in a survey can appreciate just how difficult this is. Most people approached aren’t interested in participating. Consequently, the procedure is time-consuming, especially since—given the color of a gold rabbit—a telephone survey is, of course, out of the question from the outset. The costs of providing evidence—which the claimant must initially cover out of pocket—therefore run into the five-digit range.
The Lindt & Sprüngli Group also initially faced difficulties in the litigation. The appellate court, the Munich Higher Regional Court, dismissed the lawsuit. It was not convinced that consumers sufficiently associated the gold hue with the Lindt gold bunny.
In its ruling of July 29, 2021—I ZR 139/20—the Federal Court of Justice has now granted the plaintiffs’ appeal and remanded the case to the appellate court for a new hearing and decision.
Previously, the Federal Court of Justice had avoided making a clear statement regarding when a product’s recognition among consumers—known as “market recognition”—is sufficiently high to establish trademark rights. It is now clear: at least 50% is sufficient ( though a lower percentage may still be sufficient in individual cases).
50% Recognition
According to the market survey submitted, it was proven that the degree to which the golden hue used for the wrapper of the “Lindt Gold Bunny” was associated with chocolate bunnies and the plaintiffs’ company stood at 70%. This significantly exceeded the 50% threshold assumed in this case.
Furthermore, earlier cases generally involved a color specific to the company itself, such as the Sparkasse red or Telekom magenta. Now, however, the Federal Court of Justice has ruled that acquiring recognition in the marketplace does not require that the color mark be used as a “corporate color” for all or numerous products of the company.
The Lindt & Sprüngli Group has thus now reached the first milestone: its gold hue for the Lindt Gold Bunny enjoys protection in the form of a use-based trademark.
The case is returning to the Higher Regional Court
The specific case will now proceed before the Higher Regional Court, as there is another issue to be clarified under trademark law: If a competitor uses the gold shade for chocolate bunnies other than the well-known Lindt Gold Bunny, will consumers think it is a product of the Lindt & Sprüngli Group? It therefore remains to be determined whether confusion actually arises among consumers. The Higher Regional Court had not addressed this factual question—for which a consumer survey will likely be necessary once again. The Federal Court of Justice does not resolve such factual issues itself, as it rules only on legal questions. Therefore, the Federal Court of Justice is now remanding the case to the Higher Regional Court. The Higher Regional Court will have to determine whether the defendant infringed the plaintiffs’ trademark—the gold color of the “Lindt Gold Bunny”—by selling its chocolate bunnies packaged in gold-colored foil.
Lower Courts:
Munich I Regional Court – Judgment of October 15, 2019 – 33 O 13884/18
Higher Regional Court of Munich – Judgment of July 30, 2020 – 29 U 6389/19
The statements represent initial information that was current for the law applicable in Germany at the time of initial publication. The legal situation may have changed since then. Furthermore, the information provided cannot replace individual advice on a specific matter. Please contact us for this purpose.